Amended Claims Survive IPR, Does Estoppel Follow?

Since the passage of the America Invents Act (AIA) the Patent Trial & Appeal Board (PTAB) has successfully fulfilled its charge as a speedy, cost effective alternative to patent litigation. But, that is not to say that the road has been completely bump-free. As discussed previously, there has been some controversy in the early going as patentees struggle to adapt to the motion requirements necessary for amending claims before the PTAB. That is, many patentees perceive the rigid motion requirements as an unfair hurdle, justifying their criticism on the fact that the PTAB has yet to permit a contested amendment….until last week, when the Board granted two.

In Riverbed Technology Inc. v. Silver Peak Systems Inc., IPR2013-00402 and IPR2013-00403 the PTAB considered U.S. Patents 8,370,583 and 8,312,226. As these two patents had only issued months before they were challenged in 2013, the patentee had little to lose by seeking amendment. The patentee cancelled all claims from each patent, and proposing entry of substitute claims. The PTAB granted the motion to amend in both IPRs, but only as to a subset of the newly proposed claims, finding others unnecessary. (‘583 decision) (‘226 decision)

Assuming the decision stands, the case presents an interesting question of estoppel for the district courts. That is, does the statutory estoppel of AIA trial proceeding apply to amended claims? Is it even equitable to apply such estoppel to the amended claims given the challenger is only accorded a 15-page, double spaced opposition to a Motion to Amend?

For example, 315(e)(2) codifies the estoppel as:

(2) Civil actions and other proceedings.— The petitioner in an inter partes review of a claim in a patent under this chapter that results in a final written decision under section 318 (a), or the real party in interest or privy of the petitioner, may not assert either in a civil action arising in whole or in part under section 1338 of title 28 or in a proceeding before the International Trade Commission under section 337 of the Tariff Act of 1930 that the claim is invalid on any ground that the petitioner raised or reasonably could have raised during that inter partes review.

(emphasis added)

One might argue that an amended claim is not “in a patent” until the final IPR certificate prints.  For example, the patentee could not sue on the amended claims until the IPR is finally concluded.

Suffice it to say that this issue will be litigated somewhere down the road.